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Trademark Law Gets Creative

Want to be a trademark lawyer? Well, you might need to have a creative streak.

In recent weeks, at least two major brands have used attention-grabbing strategies to protect their trademarks while raising awareness about the unauthorized use of their intellectual property. And these efforts are generating more than a little buzz.

The Velcro Companies released a video, “Don’t Say Velcro,” in which an ensemble of dancing, singing trademark attorneys implores consumers not to use the Velcro brand’s name as a generic noun or verb to describe a product with “hook and loop” fasteners, or those “scratchy, hairy fasteners” that you find on Velcro shoes, gloves, and wallets. The video, which features mostly actors, but a few real lawyers, is part of a larger campaign designed to educate consumers about the brand and the proper use of its name.

“We’re asking you not to say a name we took 60 plus years to build,” the chorus sings as a woman begins ceremoniously lifting her white shoe onto another person’s knee. “But if you keep calling these ‘Velcro shoes,’ our trademark will get killed.” The group also highlights other brands that have wrestled with the same issue, melodiously begging consumers to stop misusing those brand names as well. “If you need something to clean up your socks, do it with bleach and not with”—a “CENSORED” message suddenly appears, along with a bleep, as the group can be seen saying “Clorox.” Before the video closes, the group makes another plea: “I know that bleeped stuff is more fun to say, but if you keep doing it, our trademarks go away.”

In case you didn’t quite get the message from the video, the Velcro site also includes illustrations of what is not Velcro—shoe straps and the fasteners on boxing gloves—as well as a question-and-answer section. Here’s a flavor:

Question: Can I say, “velcro-ing” or “velcro it,” or “velcro shoes”?

Answer: No. Never. Please don’t. VELCRO® Brand is not a verb, a noun, or a stand-alone word. It should only be used like “VELCRO® Brand products” or referring to a specific product such as “VELCRO® Brand straps.” We repeat, do not ever say “velcro shoes” (or “velcro wallet” or “velcro gloves”). Ever.

And if you’re still confused, you can consult the site’s interactive quiz, which begins with the question, “Did you say the word ‘velcro’?” and then leads you through a series of yes/no questions whose answers are intended to clear things up. (“Are you referring to ‘velcro’ shoes or some other product that uses hook and loop fasteners like gloves, or wallets, or ski boots?” “Are you using ‘velcro’ to describe a clingy person or pet?”) Got it now?

Netflix also recently embraced its creative side in trying to protect its intellectual property. After learning that a bar in Chicago had opened a “Stranger Things” pop-up based on the hit TV show, Netflix sent a letter in late August to the owners informing them of their unauthorized use of the company’s intellectual property and asking them to close the bar after its planned 6-week run comes to an end in late September.

The Netflix letter was not your traditional cease and desist notice, though. Netflix opted instead for a letter that was more thematically attuned to the nature of the dispute—a letter (because the walkie talkie was busted) with “Stranger Things” references like the Upside Down, Dr. Brenner, and the Demogorgon. Addressed to “Danny and Doug,” the letter stated in full:

My walkie talkie is busted so I had to write this note instead. I heard you launched a Stranger Things pop-up bar at your Logan Square location. Look, I don’t want you to think I’m a total wastoid, and I love how much you guys love the show. (Just wait until you see Season 2!) But unless I’m living in the Upside Down, I don’t think we did a deal with you for this pop-up. You’re obviously creative types, so I’m sure you can appreciate that it’s important to us to have a say in how our fans encounter the worlds we build.

We’re not going to go full Dr. Brenner on you, but we ask that you please (1) not extend the pop-up beyond its 6 week run ending in September, and (2) reach out to us for permission if you plan to do something like this again. Let me know as soon as possible that you agree to these requests.

We love our fans more than anything, but you should know the Demogorgon is not always as forgiving. So please don’t make us call your mom.

It’s an endearing twist on the typical cease and desist letter, one that manages to acknowledge and appreciate the consumer frenzy surrounding the show while staying firm in making its demands. Whoever said that law isn’t for creative types?

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